TutorABC prevailed on remand, convincing the court that Jeda’s trademark “eTutor” would cause confusion with its “TutorABC” trademarks

On June 1, 2023, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) overturned determination previously made by Taiwan’s IP Office, finding the trademark “e Tutor” registered by the language learning institute Jeda would cause confusion with TutorABC Inc.’s famous trademarks “TutorABC” (Reg. No. 01281166, 01278886, 01636300, and 01278887), “TutorABC.com” (Reg. No. 01636299), “TutorABCjr” (Reg. No. 01467561), and “TutorMing” (Reg. No. 01355089).

Jeda’s contested trademark, “e Tutor” (Reg. No. 01758049), was filed on June 9, 2015, and granted on March 1, 2016, designated for use in services under class 41, including educational service, training service, vocational training, vocational counselling, consulting service, etc. TutorABC Inc. filed invalidation action on July 7, 2016, citing violation of Trademark Act.

On October 31, 2018, Taiwan’s IP Office (“TIPO”) found in Jeda’s favor, determining that due to the dissimilarity between “e Tutor” and TutorABC Inc.’s aforesaid trademarks, the aforementioned Trademark Act should not be applicable. TIPO agreed that TutorABC Inc.’s trademarks are famous trademarks, and that both parties’ trademarks are applied for use in similar educational services. However, TIPO was of the view that although both Jeda’s and TutorABC Inc.’s trademarks feature “tutor”, ordinary consumers still would not consider them similar with each other. More specifically, in Jeda’s “e Tutor”, the letter “e” is much bigger than the ordinary word “tutor”, and there is another ornamental cloud presented, which, when taking as a whole, could render Jeda’s contested trademark dissimilar with TutorABC Inc.’s cited trademarks.

 

TutorABC Inc. challenged TIPO’s determination in the IPC Court. In the first round, The IPC Court sided with TIPO, finding TutorABC Inc.’s similarity analysis flawed in that TutorABC Inc. inappropriately focused on the common word “tutor” shared by Jeda’s and its cited trademarks, while ignoring all the other presented elements. TutorABC Inc. appealed, and the Supreme Administrative Court (“SAC”) vacated IPC Court’s first ruling on October 27, 2022, determining that while there are variations in Jeda’s and TutorABC Inc.’s cited trademarks, the main impression formed in the consumers’ minds after seeing both parties’ trademarks would still be “tutor”. As such, the SAC posited that “e Tutor” should still be found similar with TutorABC Inc.’s aforesaid trademarks. The case was subsequently remanded back to the IPC Court for further handling in accordance with SAC’s instruction.

 

In its second ruling on June 1, 2023, the IPC Court sided with TutorABC Inc. This time, the IPC Court found TIPO’s determination erroneous.

1.      Although “tutor” is a word with ordinary meaning, such a word may still be distinctive. To this end, the IPC Court affirmed that both Jeda’s and TutorABC Inc.’s trademarks possess distinctiveness, and that TutorABC Inc.’s aforesaid trademarks have achieved the status of well-known trademarks.

2.      As to similarity analysis, the IPC Court followed the path directed by the SAC, considering “tutor” the dominant portion of Jeda’s contested trademark, which would be considered similar with TutorABC Inc.’s aforesaid famous trademarks by ordinary consumers.

3.      Given that TutorABC Inc.’s above trademarks are famous, that both Jeda and TutorABC Inc. provide similar language educational service, and that “e Tutor” is similar with “TutorABC”, the IPC Court concluded that Jeda’s contested trademark should be invalidated due to the likelihood of confusion caused by its similarity with TutorABC Inc.’s famous trademarks.

 

 

Source: 2023 Shin-Shang-Gan-Yi-No. 1 (IPC Court)

https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,111%2c%e8%a1%8c%e5%95%86%e6%9b%b4%e4%b8%80%2c1%2c20230601%2c1